Central Arizona Water Conservation District v. Matthew Pynhas
Claim Number: FA1702001717657
Complainant is Central Arizona Water Conservation District (“Complainant”), represented by Kimberly Grouse, Arizona, USA. Respondent is Matthew Pynhas (“Respondent”), Portugal.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cap-az.org>, registered with Dynadot, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 16, 2017; the Forum received payment on February 16, 2017.
On February 19, 2017, Dynadot, LLC confirmed by e-mail to the Forum that the <cap-az.org> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cap-az.org. Also on February 22, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant registered the CAP - CENTRAL ARIZONA PROJECT trade name with the Arizona Secretary of State (registered Oct. 21, 2016), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Ex. 1. Respondent’s <cap-az.org> domain name is confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has been using Complainant’s mark in the confusingly similar domain name to attract Internet users for malevolent activities. See Compl., p.3. Such use cannot be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent has registered and is using the <cap-az.org> domain name in bad faith. Respondent has a history of bad faith (i.e., Valeant Pharmaceuticals International, Inc. v. Matthew Pynhas, FA 1669899 (Forum May 6, 2016) (transfer ordered)), demonstrating a pattern under Policy ¶ 4(b)(ii). Respondent is attempting to attract Internet traffic and commercially benefit or to infect unsuspecting Internet users’ devices with malicious software (“malware”).
B. Respondent
Respondent did not submit a response in this proceeding.
1. Complainant is a municipal corporation in the United States that provides goods and services for system maintenance and operations, repayment obligations, public education, and creating water resource management programs for Arizona.
2. Complainant has common law or unregistered trademark rights in CAP OR CENTRAL ARIZONA PROJECT and has held those rights since at least from October 10, 1996 and probably well prior to that date.
3. Respondent registered the <cap-az.org> domain name on January 26, 2017.
4. Respondent has used the domain name to attract Internet users to its website for malevolent activities and to act contrary to the interests of Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant has not submitted or proved that it has a registered trademark, but submits it has registered its CAP - CENTRAL ARIZONA PROJECT tradename with the Arizona Secretary of State on October 10,1996, and that it has rights in the name under Policy ¶ 4(a)(i). See Compl., at Attached Ex. 1. Previous UDRP Panels have held that state registrations of a trademark confers rights in a mark. Blu Media Inc. v. Domain Registrar c/o Global Web Development, LLC, FA 1280215 (Forum Oct. 12, 2009) (“The Panel finds that this state registration confers upon Complainant rights in the BROKESTRAIGHTBOYS.COM mark pursuant to Policy ¶ 4(a)(i), at least from the date of registration.”). However, Complainant consistently holds “CAP - CENTRAL ARIZONA PROJECT” out in the Complaint as a tradename and does not submit that it is a trademark. “The Policy does not extend to trade names.” G. Bellentani 1821 S.p.A. v. Filoramo, D2003-0783 (WIPO Nov. 21, 2003); see also Navigo Energy Inc. v. Meier, FA 206312 (Forum Dec. 6, 2003) (“The Policy was intended solely to protect registered and unregistered trademarks and not trade names because trade names are not universally protected as are trademarks.”).
However, the Panel finds that in all probability Complainant has established common law or unregistered trademark rights to CAP or CENTRAL ARIZONA PROJECT and it is now well established that it is sufficient for a complainant in UDRP proceedings to rely on common law or unregistered trademark rights. To consider the application of that principle to Complainant, the Panel has given careful consideration to the submissions of Complainant and also to the contents of Complainant’s own website at www.cap-az.com. The Panel takes the view that it is entitled to do so, as the domain name that resolves to that website is referred to in the Amended Complaint where it is also said that it was registered in May of 1997. Respondent has therefore had notice that Complainant’s domain name and the website to which it leads are part of Complainant’s evidence in this proceeding. Respondent has also had the opportunity to reply to anything in Complainant’s case with which it does not agree, but it has not filed a Response. Complainant’s website states:
“In the early 20th century, Central Arizona Project was a shared dream of Arizonans; a vision of water security and stability for future generations to enjoy their quality of life in a desert. Now that the 336-mile long water delivery system is a reality, the leadership of CAP is responsible for protecting and preserving what past generations were able to fund and build. “
It also states:
“In 1971, the Central Arizona Water Conservation District (CAWCD) was created to provide a means for Arizona to repay the federal government for the reimbursable costs of construction. It now manages and operates CAP. Construction began at Lake Havasu in 1973 and was completed 20 years later south of Tucson. The entire project cost approximately $4 billion.”
Referring to Complainant by name the website also states:
“CAWCD is a municipal corporation and is governed by a 15-member popularly-elected Board of Directors. Board members are elected from Maricopa (10), Pima (4) and Pinal (1) counties and regularly meet twice per month. Members serve staggered 6-year terms and are not compensated for their time. CAP’s daily operations are managed by more than 400 people who are responsible for system maintenance and operations, repayment obligations, public education, and creating water resource management programs for Arizona. Approximately half of the employees work at CAP Headquarters located in north Phoenix, while the others work at the facilities located throughout the system.”
On the basis of all of this material, the Panel finds Complainant has shown that it has common law or unregistered trademark rights in CAP OR CENTRAL ARIZONA PROJECT, at least from October 10, 1996 and probably well prior to that date and that it has maintained those rights by the renewal of the registration on October 21, 2016 and its currency until October 21, 2021.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CAP OR CENTRAL ARIZONA PROJECT mark. Complainant contends that Respondent’s <cap-az.org> domain name is confusingly similar to Complainant’s CAP OR CENTRAL ARIZONA PROJECT mark under Policy ¶ 4(a)(i). The Panel notes that the domain name differs from the CAP OR CENTRAL ARIZONA PROJECT mark by the elimination of the words “CENTRAL ARIZONA PROJECT,” the inclusion of the geographic term “az” which is recognised as standing for Arizona, and the gTLD “.org.” Panels have agreed that merely adding a geographic term can still make the domain name confusingly similar, which is what has happened in this case. See Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (finding that the respondent’s <hess-uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark); see also International Soap Box Derby, Inc. v. Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1602433 (Forum Mar. 4, 2015) (“The domain name contains the mark in its entirety, merely eliminating the spaces between the terms of the mark and adding the generic Top Level Domain (“gTLD”) “.org.”). These alterations of the mark, made in forming the domain name, do not negate the obvious confusing similarity that is otherwise present. That is so because any objective observer would naturally think that the expression “cap” in the domain name, coupled as it is with the abbreviation for Arizona, was invoking the entire expression “Cap or Central Arizona Project”. Elimination of terms may also be considered non-distinguishing. Cf. WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). As such, the Panel finds that the <cap-az.org> domain name is confusingly similar to Complainant’s CAP OR CENTRAL ARIZONA PROJECT mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take the prominent “CAP” part of the CAP OR CENTRAL ARIZONA PROJECT mark and to use it in its domain name adding the geographic abbreviation “az”;
(b) Respondent registered the <cap-az.org> domain name on January 26, 2017;
(c) Respondent has used the domain name to attract Internet users to its website for malevolent activities;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e Complainant contends that Respondent has no rights or legitimate interests in the <cap-az.org> domain name as Respondent is not commonly known by the disputed domain name or any derivative of <cap-az.org>. The Panel notes that the WHOIS information for the domain name in question lists “MATTHEW PYNHAS” as the registrant. Previous panels have inferred that a respondent is not commonly known by a domain name from the WHOIS information and lack of contradicting evidence in the record. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Thus, the Panel finds that Respondent is not commonly known by the <cap-az.org> domain name;
(f) Complainant further submits that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent has used Complainant’s mark to create a likelihood of confusion to attract and potentially infect visitors’ computers with malware. Panels have held that websites designed to download viruses onto visitors’ computers are not bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). Complainant’s conclusions about Respondent’s conduct and its reason for registering and using the disputed domain name are likely to be correct; in particular the Panel notes that Respondent registered the disputed domain name only a few months after Complainant renewed the registration of its trade name with the Arizona Secretary of State. The Panel also notes that the domain name currently resolves to a webpage announcing that the page has been reported as an attack page and containing other security warnings.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith. Complainant asserts that respondent has a history and pattern of bad faith registration. Complainant notes Valeant Pharmaceuticals International, Inc. v. Matthew Pynhas, as a prior decision establishing a history of bad faith use involving Respondent. FA1604001669899 (Forum May 6, 2016). In that case, Valeant asserted that at the time the Complaint was filed in April 2016, the Respondent owned over 4,016 domains and that some of these domains resolve to websites associated with malicious software. Respondent registered the domain name of Complainant after Complainant inadvertently failed to renew the disputed domain name. The panel found the respondent, Matthew Pynhas, engaged in opportunistic bad faith registration in violation of Policy ¶ 4(a)(iii). Id. Prior findings of bad faith under the UDRP may indicate bad faith in the instant case. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). The Panel agrees that the Valeant case provides evidence of Respondent’s prior conduct and the previous UDRP ruling demonstrates a pattern of bad faith registration and use here under Policy ¶ 4(b)(ii).
Secondly, Complainant asserts that Respondent registered the <cap-az.org> domain name for the purpose of attracting and infecting users’ computers with malware which constitutes a bad faith registration in violation of Policy ¶ 4(a)(iii). Malware distribution has been considered nonexclusive evidence of bad faith under Policy ¶ 4(a)(iii). See Microsoft Corporation v. ABK / George Owens a/k/a Rohan / Rohan Suha, FA1211001473573 (Forum Jan. 21, 2013) (holding that because the respondent used the disputed domain name to attempt to facilitate the download of malicious software to the computers of the website’s visitors, the respondent had registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii)). Here, there is no direct evidence given of Respondent’s purported malware distribution, but the Panel draws that inference from the evidence. The Panel also notes that the domain name currently resolves to a webpage announcing that the page has been reported as an attack page and containing other security warnings. Accordingly, the Panel finds that Respondent has acted in bad faith by attempting to distribute malware into viewers’ computers and that this was the motivation for which Respondent registered the domain name.
Thirdly, in addition to the specific criteria for finding bad faith registration and use and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CAP OR CENTRAL ARIZONA PROJECT mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cap-az.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 24, 2017
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